For the purpose of a Section 2(e)(1) analysis, a term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).

Terms such as “Corporation,” “Inc.” and “Ltd.” must be disclaimed because they merely specify applicant’s entity type and do not function as a trademark or service mark to indicate source. TMEP §1213.03(d); see, e.g., In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988).

The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b).

THEATL the equivalent of THE ATL, a common nickname for the city of Atlanta, merely descriptive of publications featuring news and information about Atlanta

In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007)

CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system

In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987)

DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition

In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)

SMARTTOWER merely descriptive of highly automated cooling towers

In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)

OATNUT merely descriptive of bread containing oats and hazelnuts

In re Entenmann’s, Inc., 15 USPQ2d 1750, 1751 (TTAB 1990)

Where the applied-for mark shows the descriptive wording in stylized lettering BUT where the degree of stylization is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark.

DEC mark is merely descriptive of batteries deriving power from nuclear decay processes, and related services, since record demonstrates that "DEC" is routinely used as abbreviation for term "direct energy conversion,"and that term describes power source and efficient way of transforming power into electricity

In re BetaBatt Inc., 89 USPQ2d 1152 (TTAB 2008)

GRAND CANYON WEST is merely descriptive, and geographically descriptive, of transportation and tourist services on west rim of Grand Canyon

SUGAR NO. 14, SUGAR NO. 11 and COTTON NO. 2 are not merely descriptive of commodity futures exchange and related commodity trading services, since there is no evidence that numerical elements "11," "14,"or "2" in marks have any particular meaning other than to identify futures contracts uniquely associated with applicant's exchange

In re ICE Futures U.S. Inc., 85 USPQ2d 1664 (TTAB 2008)

Answering Office Actions

There are no canned answers on how to answer office actions because many refusals are not ‘typical’ refusals. Registration of a mark is specific to the facts involved. Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted (Many specimens do not show the proposed trademark to Function As A Mark.) . Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. Sometimes the only choice is amending to the Supplemental Register. It depends on what is being rejected and why.

Not every office action has an answer, some proposed trademark applications just do not comply with U.S. Trademark Law and do not qualify for common law protection because they are conflicting marks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.

If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

Federal USPTO Trademark Registration

There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:

Can be used against future applications of confusing similar marks by the USPTO;

Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;

Ability to bring federal criminal charges against traffickers in counterfeits;

Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries.